Chapter §25.05 Patent Harmonization Issues
| Jurisdiction | United States |
§25.05 Patent Harmonization Issues
[A] Procedural Harmonization
Efforts to harmonize the world's disparate patent systems have a long history.98 An important example is WIPO's Patent Law Treaty (PLT).99 The PLT aims to harmonize and streamline formality requirements of national and regional patent procedures rather than target substantive harmonization issues.100 Although the United States signed the PLT in 2000, it did not ratify the treaty until September 2013. Following enactment of the Patent Law Treaties Implementation Act of 2012,101 the PLT entered into force in the United States on December 18, 2013.102
The USPTO published final rules for domestic implementation of the PLT on October 21, 2013.103 The rules revised USPTO practice to implement the primary features of the Act, namely, (1) relaxing the filing date requirements for a patent application (for example, a claim is no longer required for a nonprovisional application (other than for a design patent) to be entitled to a filing date); (2) providing for the revival of abandoned patent applications and acceptance of delayed patent maintenance fee payments solely on the basis of "unintentional" (rather than "unavoidable") delay; and (3) the restoration of the right of priority to a foreign application or the benefit of a provisional application in a subsequent application filed within two months of the expiration of the 12-month period (six-month period for design applications) for filing such a subsequent application.104
[B] Substantive Harmonization
With regard to substantive issues, the international harmonization debate has placed primary focus on two issues: (1) whether timewise priority in patent rights is to be determined under a first-to-file system or a first-to-invent system, and (2) whether the novelty requirement should be "absolute" or "qualified." The priority issue considers whether, in cases of competing claimants to patent the same invention, a patent system should award the patent to the entity who was first in time to invent, or to the entity who was first to file a patent application for the invention. The choice of a first-to-file priority system also implicates the rights of those who may have previously and independently used the same invention but filed a patent application later or not at all (i.e., "prior user rights"). The absolute-versus-qualified novelty issue invokes the question of whether a patent system provides a pre-filing grace period. Each of these harmonization topics is addressed below.105
[1] First-to-File Versus First-to-Invent
In the early 1990s the United States announced, after prolonged debate, that it would maintain its historic first-to-invent system.106 Until March 2013, the United States was the only country in the world that continued to operate under a first-to-invent system. Although first-to-invent is generally thought to be more fair to independent/small entity inventors, it made U.S. patent law significantly more complex and administratively burdensome than the first-to-file system employed by the rest of the world.
To simplify the U.S. patent system and move toward substantive international harmonization, Congress repeatedly debated switching to a first-to-file priority system during the first decade of the 21st century.107 After additional years of negotiation aimed at reaching consensus between various industry groups, Congress enacted the Leahy-Smith America Invents Act of 2011 (AIA).108 The AIA was signed into law by President Obama on September 16, 2011. This landmark legislation transitioned the U.S. from its historic first-to-invent priority principle to a unique "first-inventor-to-file" system.109
The AIA represents a unique hybrid of (or compromise between) pre-AIA U.S. law and absolute novelty "first-to-file" systems.110 The AIA retains a one-year prefiling date grace period, but only for disclosures made by the inventor (or persons directly or indirectly obtaining the invention therefrom), not those made solely by third parties.111 The AIA first-inventor-to-file system went into effect on March 16, 2013 for patent applications filed on or after that date.112 The mechanics of the post-AIA first-inventor-to-file system are detailed in Chapter 7A of this treatise.113
Critically, the AIA changes concerning first-inventor-to-file are purely prospective. This means that for patents or applications that were already in existence on March 16, 2013, the traditional pre-AIA framework continues to control throughout the life of such patents or applications. For example, if federal court litigants challenge the validity of patents that issued (or were filed for) before March 16, 2013, they will continue to mount those challenges under pre-AIA rules. Given the 20-year term of a patent,114 the duration and complexity of patent litigation, and the possibility of appeal to the Federal Circuit and review by the Supreme Court, it will be necessary to know and apply pre-AIA rules for many years following the AIA's 2011 enactment.
Because U.S. patent law will continue to operate on a dual (pre- and post-AIA) system for some time to come, the traditional first-to-invent principles remain relevant and important in the United States.115 For example, operating a patent system under a first-to-invent principle means that when two (or more) persons apply for a patent on the same invention, each having independently made the invention (i.e., not copied it), the patent will be awarded (at least theoretically) to the person who was first in time to invent, regardless of the order in which the two filed their respective patent applications.
The use of "theoretically" in the previous sentence indicates that the process did not occur automatically. In the pre-AIA USPTO, the competing claimants had to participate in an interference proceeding, an inter partes adjudicatory proceeding within the USPTO to determine which party invented first.116 In a USPTO interference, the party who was the last to file (the junior party) bore the burden of overcoming a presumption that the first to file (the senior party) also was the first to invent. As discussed supra,117 the basic statutory provisions that governed interferences are 35 U.S.C. §102(g)(1) (2006) and 35 U.S.C. §135 (2006). The rules and procedures for interferences were quite complex.118 Interference proceedings are no longer available on or after March 16, 2013, but first-to-invent priority principles will continue to apply to validity determinations for pre-AIA issued patents for many years beyond that date.
In countries other than the United States, timewise priority has long been established via a first-to-file system. This is much less cumbersome from an administrative standpoint than the United States' historic first-to-invent system. No determination of dates of conception, diligence, and reduction to practice is necessary, as was the case in U.S. interference proceedings; in the event of a conflict, the patent will be awarded to the party that has the earlier filing date. The concept of invention date thus has very little meaning in foreign patent systems.
[2] Prior User Rights
The first-to-file priority system has been characterized as unfair for prejudicing the independent inventor with fewer resources and limited capacity to win the race to the patent office. This unfairness is ameliorated to some extent, however, by the recognition in many patent systems of "prior user rights."119
A prior user right is essentially a defense to infringement. Prior user rights operate as follows: Assume that party A, a German national, obtains a German patent on a process for brewing beer, and sues party B, an unrelated German national, for infringement of A's patent. B establishes that she independently developed the same process before A did and began using it in B's beer-brewing business, as a trade secret, prior to the filing date of A's patent application. B may also have filed a German patent application on...
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